The Complainant is Vorwerk International AG, Switzerland, represented by Moeller IP, Argentina.
The Respondent is Milen Radumilo, Romania.
The disputed domain name <thermomixmj.com> is registered with SNAPNAMES, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2021.
The Center appointed Cherise Valles as the sole panelist in this matter on November 24, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Vorwerk Group (“Vorwerk”) has been in business for more than 130 years. It employs about 590,000 people worldwide including about 578,000 as independent sales partners and about 12,000 as employees.
Thermomix is a business division of Vorwerk that has direct-selling operations in 70 countries and a reputation for high quality, innovative products.
In 1970, Thermomix developed a kitchen product that could simultaneously mix and cook. In 2020s, Thermomix generated EUR1,584 million in sales. An average of 59,900 self-employed sales advisors and 5,900 employees work for Thermomix.
Vorwerk Engineering regularly brings new household appliances to the market. There are over 120 people on the Research and Development team, who work on new ideas for products and have received many patents for these products. For the Thermomix alone, patents were filed for 151 inventions.
Vorwerk has filed and received registration for trademarks in the following jurisdictions, at a minimum, in the respective classes:
The disputed domain name <thermomixmj.com> was registered on September 9, 2021. The trademark THERMOMIX was filed and registered in the following jurisdictions in these respective classes:
The Complainant is also the owner of more than 1,500 domain names that cover all types of Top-Level Domain (“TLD”) names, including <thermomix.de>, <thermomix.dk>, and <thermomix.eu>. Almost 400 of these domain names contain the Complainant trademark THERMOMIX (Annex 4).
The disputed domain name resolves to an active website containing several pay-per-click (“PPC”) links such as “Thermomix TM5”, “Robot Thermomix” and “Robots”.
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered THERMOMIX trademark, in light of the fact that it wholly incorporates the Complainant’s mark with the addition of the letters “mj”.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Complainant claims that the links hosted on the website which the disputed domain name resolves to, redirect users to websites unrelated to the Complainant, including the website offering THERMOMIX branded products not originally manufactured by the Complainant.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. The disputed domain name incorporates the THERMOMIX trademark in its entirety with the addition of the letters “mj”. Given the Complainant’s trademark registration as detailed above, the Complainant has established its trademark rights in the term “thermomix” for the purposes of paragraph 4(a)(i) of the Policy.
As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Since the THERMOMIX trademark is recognizable within the disputed domain name, the inclusion of the letters “mj” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark THERMOMIX.
It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the TLD into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”. In the present case, the TLD “.com” is disregarded under the first element of the confusing similarity test.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have held that a complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See, The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the panel notes that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has stated that the Respondent is not the owner of any trademark registration that gives him rights or legitimate interests in the disputed domain name. The Respondent has received no authorization of any sort from the Complainant to use the THERMOMIX trademark or include it in any domain name.
On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s THERMOMIX trademark in any manner, including in, or as part of, the disputed domain name.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
Furthermore, the nature of the disputed domain name, consisting of the Complainant’s THERMOMIX trademark with the addition of the letters “mj”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The disputed domain name resolves to a website containing several PPC links to products displaying the trademark THERMOMIX, but which offer products that are not originally manufactured by the Complainant. In addition, none of the websites are owned by sellers that have been authorized by the Complainant.
The Panel notes that the Complainant’s trademarks and domain names were registered and granted well before the date of registration for the disputed domain name by the Respondent. At the time of registration of the disputed domain name, given the well-known nature of the Complainant’s trademarks, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks. Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <thermomixmj.com> be transferred to the Complainant.
Cherise Valles
Sole Panelist
Date: December 10, 2021